BASF Agro B.v., Arnhem, Zurich Branch v. Makhteshim Agan of North America Et. Al

7/28/2019 BASF Agro B.v., Arnhem, Zurich Branch v. Makhteshim Agan of North America Et. Al.

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1 3=BASF AG RO B.V., ARNHEM (NL),ZURICH BRANCH,

Plaintiff,V.ivil Action N o:

MAKHTE SHIM AGAN OF NORTHAMERICA, INC., CONTRO LSOLUTION S, INC., and DO ITYOURSELF PEST CONTR OL, INC.Defendants.

JURY TRIAL DEMANDED

Plaintiff BA SF A gro B.V., Arnhem (NL ), Zurich Branch ("BAS F"), for itscomp laint against defendants Mak hteshim Agan of North Am erica, Inc., ControlSolutions, Inc., and Do It Yourself Pest C ontrol (collectively, "Defendants"),alleges as follows:

1. This action arises under the Patent Laws of the U nited States, 35U.S.C. 1 et seq., including at least Sections 271, 281, 283, 284, and 2 85.

2. This Court has subject matter jurisdiction pursuant to 28 U.S.C.-1-


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1331 and 1338(a).3.enue is proper. under 28 U.S.C. 1391 and 1400(b).4. Plaintiff BASF is a limited liability company organized under the lawsof The Netherlands, acting through its Swiss branch office, which is organizedunder the laws of Switzerland and registered at the Handelsregisteramt Zurich,

Zurich, Switzerland, with its place of business at Im Tiergarten 7, 8055 Zurich,Switzerland. The registered office of BASF Agro B.V., Arnhem (NL) is located atGroningsingel 1, Arnhem Gelderland, 6835 EA, The Netherlands.

5. BASF markets and sells products relevant to this case in the UnitedStates through its distributor BASF Corporation ("BASF Corp."), which is aDelaware corporation with its headquarters in Florham Park, New Jersey. BASFCorp. operates much of the business relevant to this action out of its AgrochemicalProducts Division's United States headquarters located in Research Triangle Park,North Carolina ("RTP").

6. Defendant Makhteshim Agan of North America, Inc. ("MANA") is acorporation organized under the laws of Delaware, with its principal place ofbusiness in Raleigh, North Carolina. MANA owns 67.1% of the shares inDefendant Control Solutions, Inc. ("CSI") and is the registrant at the United States

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Environmental Protection Agency (EPA) for numerous agricultural productsmarketed, distributed, and sold by CSI. MANA also supplies and distributesinsecticides, fungicides, and herbicides, including active ingredients and end-useproducts to marketers and distributors throughout the United States, including inGeorgia and in this judicial district.

7. MANA regularly does or solicits business in Georgia, has continuousand systematic contacts with Georgia, including by regularly transacting businesswithin this district in a substantial, meaningful, and continuous way and by filing acomplaint for declaratory relief in this judicial district. Through its variousentities, MANA has engaged in activities related to the subject matter of this actionand thus is subject to personal jurisdiction in this judicial district.

8. MANA regularly distributes active ingredients and technical materialimported into the United States to various entities which formulate these technicalmaterials into end-use products for distribution throughout the United States,including in Georgia and in this judicial district.

9. Defendant CSI is a corporation organized under the laws of Texas,with its principal place of business at 5903 Genoa-Red Bluff, Pasadena, Texas.CSI markets, distributes, and supplies many agrochemical compounds andformulations, in direct competition with Plaintiffs.

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10. CSI regularly does or solicits business in Georgia, has continuous andsystematic contacts with Georgia, including by regularly transacting businesswithin this district in a substantial, meaningful, and continuous way. Through itsvarious entities, CSI has engaged in activities related to the subject matter of thisaction and thus is subject to personal jurisdiction in this judicial district.

11. CSI regularly takes possession of the active ingredients and technicalmaterial imported into the United States. CSI stores these materials in variouswarehouses across the United States and supplies the materials to a network ofdistributors and dealers, including in Georgia and in this judicial district. CSI alsoformulates these technical materials into end-use products for distributionthroughout the United States, including in Georgia and in this judicial district.

12. Defendant Do It Yourself Pest Control, Inc. ("Do It Yourself') is acorporation organized under the laws of Georgia, with its principal place ofbusiness at 3 05 Shawnee North Dr., Suite 100, Suwanee, Georgia. Do It Yourselfmarkets and sells pesticides, including termiticides, that are directly related to the

subject matter of this litigation. Do It Yourself is a distributor of products sold byCSI and MANA, including the infringing products at issue in this case.

13. MANA, CSI and DIY have sold product that infringes the BASFpatent at issue in this judicial district.

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14. BASF and its affiliates are in the business of researching, developing,testing and/or selling multiple types of products and technologies in theagrochemical field and/or animal health fields. One such agrochemical productmanufactured and sold by BASF is a chemical compound commonly known as"Fipronil." Fipronil is useful as a pesticide to control many different types ofinsects and pests, including termites.

15. BASF has Fipronil technical material manufactured for it in France bya BASF affiliate. This Fipronil technical material serves as the active ingredient informulated chemical products ("Fipronil-based products"). BASF sends Fiproniltechnical material made in France to the United States and Brazil where it isformulated into Fipronil-based products for commercial sale in the United States.

16. BASF Corp. operates in the United States as a distributor for BASF'sagrochemical products, including Fipronil technical material and Fipronil-basedproducts. BASF Corp. operates much of its Fipronil business out of its

agrochemical products headquarters in RTP. BASF Corp. sells Fipronil technicalmaterial and Fipronil-based products in the United States to its customers, who areprimarily distributors.

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17. One such Fipronil-based product sold by BASF in the U.S. isTermidor SC. Termidor is the most effective and the leading termiticide soldin the U.S. Defendants currently market a Fipronil-based product under the tradename TaurusTM SC ("Taurus"). Taurus competes directly with BASF's TermidorSC product in the U.S. marketplace.

18. United States Patent No. 5,618,945 ("the '945 patent") (attachedhereto as Exhibit A) is entitled "Process For the Sulfinylation of HeterocyclicCompounds," and was duly and legally issued on April 8, 1997. The '945 patentteaches and claims novel processes for sulfinylation of heterocyclic compoundssuch as phenylpyrazoles. A "heterocyclic compound" is an organic compoundwith a ring structure, containing at least one atom of carbon and at least one atomother than carbon, e.g., sulfur, oxygen or nitrogen. "Sulfinylation" is the processof adding a "sulfinyl" functional group of atoms (e.g., a sulfur atom with a doublebond to oxygen and single bonds to two different carbon atoms) to another

compound, in this case a heterocyclic compound, by means of a chemical reaction.The processes taught and claimed in the '945 patent can be used in the productionof Fipronil.

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19. BASF is the assignee and current owner of the '945 patent. BASF isthus the owner of all right, title and interest in and to the '945 patent, including allrights to recover for any and all past and present infringement thereof, for non-animal health uses.

20. MANA and CSI became aware of the '945 patent at least as early asApril 8, 2010.

21. As set forth in the '945 patent, sulfinylation is one method to achievehigh selectivity and yield in the large scale manufacture of Fipronil. Thesulfinylation route of manufacture leads to the presence of, inter alia, atrifluoromethanesulfinic acid ("TFSH") impurity.

22. TFSH is a very rare impurity and thus the presence of TFSH as animpurity in a Fipronil product strongly indicates that the sulfinylation route wasused to manufacture the Fipronil, according to a process that is covered by BASF's'945 patent.

23. Chemical analysis of the Taurus product manufactured, importedand/or sold by Defendants in the U.S., to test for the presence of TFSH as animpurity, has revealed that TFSH is present in at least some of the Taurus product

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and that a sulfinylation route that infringes the '945 patent was used to make theFipronil in the tested products.

24. By importing, selling and/or offering to sell in the U.S. Fipronil madeby utilizing the sulfinylation route, Defendants have infringed, are infringing, andwill continue to infringe, literally and/or under the doctrine of equivalents, one ormore claims of the '945 patent, directly, by contributory infringement, and/or byactively inducing infringement.

25. At least MANA's and CSI's infringement of the '945 patent, directand/or indirect, was, is, and will continue to be willful. As a consequence ofDefendants' infringement of the '945 patent, direct and/or indirect, BASF suffered,is suffering, and will continue to suffer irreparable harm for which there is noadequate remedy at law. These injuries will continue unless and until Defendants'infringing activities are permanently enjoined by this Court.

26. As a consequence of Defendants' infringement of the '945 patent,direct and/or indirect, BASF suffered, is suffering, and will continue to suffer

damages in an amount not yet determined.

27. BASF, under Rule 38 of the Federal Rules of Civil Procedure,requests a trial by jury of any issues so triable by right.


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WHEREFORE, BASF prays for judgment:A. In favor of BASF, finding that Defendants' importation, sale, use,

and/or offer for sale of a Fipronil-based product or Fipronil technical materialmade by the sulfinylation route infringes one or more claims of the '945 patent,directly, by contributory infringement, and/or by actively inducing infringement;

B. Permanently enjoining Defendants and their officers, agents, servants,employees, parents, subsidiaries, affiliates, successors, assignees, licensees, andattorneys, and all persons acting in concert or participation with them, frominfringing the '945 patent, directly, by contributory infringement, and/or byactively inducing infringement;

C. Awarding BASF damages in an amount adequate to compensate themfor harm caused by Defendants' engagement in activities that constituteinfringement, and any infringement after the filing of this action, of the '945patent;

D. Awarding BASF pre judgment and post judgment interest on thedamages caused to them by reason of Defendants' past and ongoing infringementof the '945 patent;


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E.hat MANA's and CSI's infringement of the '945 patent has been andis willful, and trebling damages awarded for that infringement;

F. That this is an "exceptional case" pursuant to 35 U.S.C. 285 and ordering MANA and CSI to pay BASF's attorneys' fees and costs; and

G. Awarding such other and further relief as this Court may deem justand proper.

Dated: March 19, 2013William M. Ragl d, Jr.Georgia State Bar No: 591888W OMBLE CARLYLE SANDRIDGE & RICE, LLP271 17th Street, NWSuite 2400Atlanta, GA [email protected]: (404) 888-7466F: (404) 870-2401Attorney for PlaintiffBASF Agro B. V., Arnhem (NL ), Ziirich Branch

Of Counsel:Kenneth A. GalloPAUL, W EISS, RIFKIND, W HARTON& GARRISON, LLP2001 K Street NWWashington, D.C. [email protected]: (202) 223-7300F: (202) 223-7420

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Kripa RamanErin WigginsPAUL, WEISS, RIFI ]ND, WHARTON

& GARRISON, LLP1285 Avenue of the AmericasNew York, NY 10019-6064kraman@paulweiss [email protected]: (212) 373-3000F: (212) 757-3990

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BASF Agro B.v., Arnhem, Zurich Branch v. Makhteshim Agan of North America Et. Al